Judge Andrews Grants-in-Part Daubert Challenge to Damages Expert

Judge Andrews recently issued a memorandum order ruling on the Defendants’ motion to exclude testimony of Plaintiffs’ damages expert in MiiCs & Partners, Inc., et al. v. Funai Electric Co., Ltd., et al., C.A. No. 14-804-RGA, Memo. Or. (D. Del. Dec. 7, 2017). The Defendants lodged several challenges to the Plaintiffs’ expert’s opinion. First, Judge Andrews found that, for one patent-in-suit, the expert’s use of a “5% to 10% cost-savings benefit” provided by the Plaintiffs’ technical expert “demonstrates that he properly apportioned damages and profits between the patented and unpatented features.” Id. at 4-5. For a second patent-in-suit, however, Judge Andrews found “no basis for concluding that he apportioned between the patented and unpatented features” because the “only place where [the expert] appears to consider the profit attributable to the inventions, as distinguished from unpatented features, is in his discussion of Georgia-Pacific Factor 13 . . . [which] lacks any meaningful analysis or attempt to quantify the portion of realizable profit that should be attributed to the patented feature of the smallest salable unit.” Id. at 6.

Moreover, the Defendants argued, and Judge Andrews agreed, that an unaccepted offer to license a portfolio of over 360 patents was not a reliable starting point for the hypothetical negotiation as to one patent-in-suit because it was only an offer, it was not a comparable number of patents, its timing suggested that it was litigation-influenced, and it involved different parties. Id. at 7-8.

Finally, Judge Andrews rejected the use of a “composite royalty rate,” which the Defendants characterized as “appl[ying] a royalty base that includes units accused under any asserted patent to a royalty rate with contributions from every asserted patent.” Id. at 10. This approach, Judge Andrews found, “assigns to each accused product the same per-unit royalty regardless of how many patents that product is accused of infringing.” Id. at 11. Judge Andrews also rejected several other arguments for excluding other portions of the proffered expert testimony.

We previously reported on Judge Sleet’s in limine rulings directed to Section 271(f) and European Patent Office proceedings in patent litigation related to aortic valve stents between Edwards Lifesciences and Medtronic Corevalve. After a jury trial last week, the jury awarded Edwards Lifesciences lost profit damages and reasonable royalties. The verdict form has been made […]

Delaware IP Law Blog Author, Greg Brodzik, and Contributor, Jim Lennon, were invited by IPWatchdog.com to comment on the Supreme Court’s recent decision in Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., 569 U.S. ___, on the scope of patent eligibility in the context of DNA discoveries. Follow this link to […]

Delaware IP Law Blog ("Blog") is intended for informational purposes only and does not contain any legal advice. The authors of the Blog are attorneys in the law firm of Young Conaway Stargatt & Taylor, LLP, and the views expressed by one or more of the authors, including comments posted by registered visitors, solely reflect the opinions of those authors and not those of the firm or its clients. The publication of and posting to the Blog does not create an attorney-client relationship and the authors assume no liability for the dissemination of attorney-client or confidential information posted on the Blog by registered or unauthorized visitors. The Blog is not intended to be advertising of legal services or any other service. The authors assume no responsibility for inaccuracies.

The authors reserve the right to remove any posted content. Content that is illegal, obscene, defamatory, threatening, infringing of intellectual property rights, invasive of privacy, or otherwise injurious or objectionable will be removed.